Senators Coons, Tillis, colleagues introduce bipartisan, bicameral bill to foster American innovation by modernizing the Patent Trial and Appeal Board
WASHINGTON – U.S. Senators Chris Coons (D-Del.), Thom Tillis (R-N.C.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii) reintroduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act today. The PREVAIL Act supports American inventors, encourages investments in intellectual property, secures U.S. global technology leadership, and safeguards both economic and national security. Building on legislation previously introduced by Senator Coons, this bill updates and improves our patent system to ensure it protects essential property rights.
Representatives Nathaniel Moran (R-Texas) and Deborah Ross (D-N.C.) introduced a companion bill in the U.S. House of Representatives. The PREVAIL Act previously passed out of the Senate Judiciary Committee by a bipartisan vote last year.
“Whether you have the backing of a huge company or are tinkering in your garage, you should be confident that your ideas and innovation will be protected. That’s what the Patent Trial and Appeal board was intended to do,” said Senator Coons. “Unfortunately, bad actors ranging from multinational corporations to overseas grifters have spent the last decade exploiting the PTAB to harass innovators and prevent them from profiting off their creations. With the bipartisan PREVAIL Act, we restore fairness to the patent process and let America get back to inventing and innovating.”
“To maintain the United States’ position as the global leader in technology and innovation, we must work with inventors – large and small – to improve and streamline our patent system,” said Senator Tillis. “The PREVAIL Act makes commonsense changes to our patent system that will increase transparency, safeguard patents, eliminate duplicative legal proceedings, and encourage American inventors to design and create. We must restore faith and confidence in the Patent Trial and Appeal Board.”
“A strong patent system helps American innovation remain at the global forefront. The bipartisan PREVAIL ACT will support our innovators by leveling the playing field when it comes to adjudicating patent validity, further encouraging innovation and economic growth,” said Senator Durbin.
“America’s patent system drives innovation and fuels long-term economic growth by supporting small businesses and entrepreneurs in Hawaii and across the country,” said Senator Hirono. “The PREVAIL Act supports this crucial innovation by ensuring all patents are treated the same no matter where they are challenged and eliminating the repetitive challenges that have placed unnecessary burdens on innovative startups, inventors, and universities.”
“I’m proud to represent the Research Triangle Park, where world-class institutions, organizations, scientists, and innovators are propelling our state and country to new heights,” said Congresswoman Ross. “It’s critical that we work across party lines to ensure the people who are driving our country’s innovation have the tools they need to thrive. That’s why I’m proud to reintroduce the PREVAIL Act, which will institute much-needed reforms to PTAB and create a fairer system for inventors and researchers. When we support innovators, we bolster American competitiveness and the American economy.”
“The PREVAIL Act provides much needed protection for American inventors by addressing the most egregious problems with the existing PTAB system. By correcting some of the imbalances that have allowed large corporations to exploit the system and silence competition, the PREVAIL Act will restore confidence in our patent process, reduce abuse of the PTAB system, increase transparency, and ensure that the rights of everyday inventors are protected—not crushed by legal loopholes and procedural abuse outside of an Article III courtroom. In short, it will help spur American innovation rather than deter it,” Congressman Moran.
The Patent Trial and Appeal Board (PTAB) was created within the U.S. Patent and Trademark Office (USPTO) to provide a faster, more efficient process for adjudicating patent validity than going to federal district court. However, in practice, the PTAB has become a forum where patent claims are consistently invalidated through proceedings that are duplicative of – not an alternative to – the district court. According to USPTO data, approximately 80% of PTAB proceedings that reach a final written decision result in the invalidation of at least one challenged patent claim. Two-thirds of those proceedings result in the invalidation of all challenged patent claims.
The PREVAIL Act would reform the PTAB to ensure fair treatment for inventors, establish a true alternative to district court litigation, and equip the USPTO with the resources it needs to effectively administer a patent system that incentivizes American innovation and enables U.S. innovators to compete. The bill would also end USPTO fee diversion and support innovative small businesses.
The PREVAIL Act would reform the PTAB in the following ways:
- Require standing for PTAB challengers and limit repeated petitions challenging the same patent
- Harmonize PTAB claim construction and burden of proof with federal district court
- End duplicative patent challenges by requiring a party to choose between making its validity challenges before the PTAB or in district court
- Increase transparency by prohibiting the USPTO director from influencing PTAB panel decisions
This bill has been endorsed by the Council for Innovation Promotion (C4IP), the Biotechnology Innovation Organization (BIO), and the Innovation Alliance.
“The PREVAIL Act would help restore balance in the U.S. patent system. By eliminating redundant legal challenges that drain resources from industry and government alike, and by ensuring consistent standards between district courts and the Patent Trial and Appeal Board, the Act will help create a more balanced and efficient patent system for all,” said David Kappos and Andrei Iancu, board co-chairs of C4IP and former Under Secretaries of Commerce for Intellectual Property and Directors of the USPTO. “Reducing duplicative proceedings will promote efficiency within the legal system and help drive economic growth.”
“The PREVAIL Act restores the Patent Trial and Appeal Board to what its creators intended it to be – a cheaper, quicker alternative to litigation,” said Brian Pomper, Executive Director of the Innovation Alliance. “It limits the ability of deep-pocketed incumbent companies to weaponize the administrative process against inventors, preventing inventors from achieving the benefits a patent should bestow. The Innovation Alliance thanks Senators Coons and Tills and Representatives Moran and Ross for introducing the PREVAIL Act. It is an important bill that deserves to be passed into law.”
“The reintroduction of the PREVAIL Act represents a significant effort to achieve an appropriate balance within the U.S. patent system,” said AIPLA Executive Director Vincent Garlock. “We have learned a lot since the AIA was enacted, and the PREVAIL Act offers improvements calculated to protect patent holders from undue challenges while maintaining avenues for legitimate disputes. We appreciate the dedication of Senator Coons and Senator Tillis in addressing these critical issues and look forward to working together to ensure a fair and effective patent system.”
“MDMA thanks Senators Chris Coons and Thom Tillis for the bipartisan reintroduction of the ‘Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act,” said Mark Leahey, President and CEO of the Medical Device Manufacturers Association (MDMA). “This important legislation would strengthen intellectual property rights, which ultimately results in new innovative cures, therapies and diagnostics to help address the needs of patients and providers. The United States cannot maintain and grow our leadership position in medical technology innovation without strong IP protections in place, and the ‘PREVAIL Act’ would support this important work to bolster our ecosystem.”
“IEEE-USA fully supports the Promoting and Respecting Economically Vital American Innovation Leadership Act,” said IEEE-USA President Tim Lee. “Thousands of engineers and scientists who are members of IEEE rely on predictable and effective patent rights to license and commercialize their inventions. In recent years, with the creation of the Patent Trial and Appeal Board, an inventor’s defense against predatory infringement tactics has been weakened, thereby limiting their ability to create jobs and contribute to economic growth. The PREVAIL Act will restore the incentives for technological innovation and economic growth to ensure U.S. technological leadership. We look forward to working with Senator Tillis and Senator Coons to pass the PREVAIL Act to end abuse of the PTAB.”
“The PREVAIL Act will empower startups and small businesses by realigning the Patent Trial and Appeals Board with Congress’s original intent,” said Dr. Hans Sauer, Deputy General Counsel and Vice President for Intellectual Property, Biotechnology Innovation Organization (BIO). “Lawmakers had hoped the PTAB would provide a faster and cheaper alternative to costly federal court litigation. But over the past decade and a half, entrenched corporations have abused PTAB proceedings, using them to harass innovators with expensive, duplicative patent challenges in two forums at once.”
“AUTM – the technology transfer professionals association – thanks Senators Coons, Tillis, and their colleagues for re-introducing the PREVAIL Act in the 119th Congress,” said AUTM CEO Stephen Susalka. “This legislation will halt serial challenges and bring the PTAB process into better balance with the rules used in federal court. Universities need certainty if they are to fully advance the discoveries made on their campuses. This legislation moves us in that direction, and AUTM looks forward to working with the Judiciary Committee to advance its goals.”
Senators Coons and Hirono are members of the Judiciary Committee’s Intellectual Property Subcommittee. Senator Tillis is the chair of the Subcommittee.
A fact sheet on the bill is available here.
The text of the bill is available here.